Design Patent Litigation: Notice Pleading Requirements Remain Low

This design patent decision is interesting and important on several levels and so I have divided the post into two sections. This section focuses on the district court's clear error in dismissing the infringement lawsuit on the pleadings. The second section will focus on the Federal Circuit's dismissal of the charges filed personally against the employees who caused the allegedly infringement.

The set-up here is interesting. Mr. R.J. Hall designed a new product known as a “Towel Tote” that is basically an absorbent scarf with pockets on the ends. [Buy one here.] After filing his design patent application, Hall sat down with Mr. Farley Nachemin at Bed Bath & Beyond (BB&B) to see whether the company would retail his product. Instead of moving forward with Hall, BB&B mailed Hall's product to Pakistan and had it copied and manufactured for retail distribution back in the US.

When his patent issued, Hall sued BB&B as well as Nachemin and other executives for design patent infringement and a number of state-law business claims such as, false advertising, misappropriation, and unfair competition. U.S. Design Patent No. D596,439. The district court then dismissed the case on the pleadings – finding that the complaint did not particularly identify the “new, original, and ornamental” features of the design patent. On appeal, the Federal Circuit rejects that decision and instead holds that, even under Iqbal and Twombly, a pleading does not require this level of information. Rather, following the law of utility patents, the court holds here that a proper design patent infringement complaint only requires the following five elements:

An allegation of ownership of the patent;

The name of the defendant;

The patent number;

A statement of the means by which the defendant allegedly infringes; and

Relevant sections of the patent laws.

Citing Phonometrics, Inc. v. Hospitality Franchise Systems, Inc., 203 F.3d 790 (Fed. Cir. 2000). In this case, the district court's ruling was well off-base because the design patentee need not prove the design's points of novelty even at trial since validity is presumed and infringement no longer relies on the points-of-novelty test.

In the litigation, BB&B had filed a counterclaim alleging that that Mr. Hall himself had violated the Lanham Act by telling the company his product was “protected by patent” even before the patent issued. BB&B also alleged that the Hall committed false marking by continuing to mark his product “patent pending” even several months after the patent had issued. On appeal, the Federal Circuit holds that these statements “cannot be viewed as even plausibly misleading.” With regard to the the false marking claim, the court also adds that the defendant had failed to plead competitive harm, which is now a core element of false marking under the Leahy-Smith America Invents Act of 2011.

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Judge Newman wrote the majority opinion that was joined by Judge Linn.

Judge Lourie wrote in dissent – basically arguing that more deference should have been given to the district court's role of ensuring that the pleadings are clear enough. Judge Lourie acknowledged legal mistakes of the district court, but also directed attention to a separate aspect of the district court decision. The district court wrote: “Rather than plead in a coherent fashion, making clear how the facts support a particular theory of infringement as to a given Defendant, Plaintiff has conflated all his facts, pleading without making any distinctions of any kind. This ambiguity in pleading is unacceptable.”

Notes

As with most design patents, this one issued without substantive examination on the merits. The application was filed in November 2008 and the first correspondence from the USPTO was a notice of allowance mailed in May 2009. The patent issued shortly thereafter.

Just read the thread, friend. It’s typical thing. You asked a question. I did a little research and gave a sincere and reasonable answer to the question. You responded with a correction and some curt b.s. about a “strawman”. Meanwhile, right on cue, your little puppy friend started in with his inevitable yapping.

I apologized for the mistake that you pointed out and corrected it. Then you insisted there was some other mistake and accused me of ducking out of answering when I didn’t post a clarification quickly enough for your satisfaction. Meanwhile, you’re little puppy friend is yap-yap-yapping away. Maybe you should try correcting anon’s out-in-the-open h–sh-t for a change instead of worrying about whether some validity argument you imagined I was making was “clear and convincing” enough for you. Or not. It’s your choice.

Let me know if you want to retract (or at least explain) your odd statement about anonymously informing third parties of prior art being somehow “unethical” and “slimy.” And your even stranger “defense” to avoid learning about such art.

I find it especially interesting given your strong feelings about keeping current patent assignment information out of the public’s reach.

Ouch! “Looks like I hit a nerve,” as your li’l buddy says every other day (at least).

Seriously, though, your silence as to the merit’s of anon’s “staff review of registered mail” scheme for avoiding knowledge of prior art is understandable. Surely you won’t mind if I take your silence as affirmation of the workability of that scheme. Let me guess: you originated it, right, and you’re too proud to take credit for it. But do you use it yourself?

I don’t have any feelings about them one way or the other. I’m not a design examiner. But Examiner Seeger is, and her determination seems to contradict your feelings. Maybe Dennis can explain why Examiner’s Seeger’s work on this particular design patent doesn’t rise to the level of a substantive examination on the merits. I’d still like to know. Maybe she would too.

Just checking to see how close you and anon really are. It’s sorta cute, actually, the way he cheers you on and the way you mostly ignore him. Reminds me of Chester and Spike. Lots of people need a little friend like that. He sure seems to like you.

It’s pretty straightfoward, AJ. The D’741 design is quite similar to the design at issue here (the D’439). Compared to the D’439 patent, the references cited in the D’741 patent are more obviously relevant than the references cited in D’439. Put another way, the fraction of references that seem obviously relevant is greater in the ‘741 patent. That’s all. I thought it was interesting because it’s the same Examiner. Different key words used? That itself is interesting, given that the claims in these patents are pictures.

Please let me know about your buddy anon’s set-up for preventing the contents of registered letters from leaking in to his attorney’s head. I see that he’s added something new about “unsolicited mail”, in case that matters.

Anyone else please feel free to pipe in. As I said, the procedure for using staff to open and review registered letters and throw them away if they contain information about prior art sent from other attorneys is a new one to me. Has anyone heard of this before? Are others using this procedure or is it just anon and his counsel?

LOL – man, you are digging (but you also forgot about the part of the misrepresentation, and the fact that the mail is unsolicited, as well as the understanding of what a firm can open (i.e., we are not talking personal mail)).

“I was merely pointing out examples of art that is more relevant than that cited by the Examiner and another case by the same Examiner that, for whatever reason, cited more relevant art.”

US D428,751 was issued by Examiner Seeger. She cited it in US D596,439 (that patent asserted in this suit). So she was clearly aware of US D428,751 (and the art cited in it) when she searched and examined US D596,439, and in her opinion the ornamental design claimed in US D596,439 was patentable over that art.

Any time you want to present a clear and convincing case of invalidity of this particular design patent, please do go ahead.

Thanks, but I don’t need your permission.

However, given your first couple attempts,

There were no such patents. I was merely pointing out examples of art that is more relevant than that cited by the Examiner and another case by the same Examiner that, for whatever reason, cited more relevant art. That’s what I said the links were “interesting” and not “these links render this design obvious.” Unlike your pal anon I’m usually pretty clear and direct about these things. And why wouldn’t I be?

Speaking of which, are you aware of any law firms who instruct their staff to receive registered mail sent to attorneys from other attorneys regarding legal matters pertaining to clients, open the mail, review the mail to determine the contents, and then throw the mail away if the staff determines that prior art was referenced in the mail (presumably without informing the attorney of the art)? Your friend anon claims that his counsel’s office is set up that way to avoid receiving prior art from third parties. I’d never heard of this before. Does that sound like something that any reasonable attorney would actually implement in his office or that any client would instruct his attorney to implement?

Who said anything about “defending all these design patents?” I am certainly not defending “all these design patents” – whatever that means.

Oh wait, you feel threatened because of your (non)natural anti-patent stance and just jumped to a conclusion that those who are not anti-patent must want patents for anything, even those things not in accord with law.

Sorry, but you have created a strawman as no one has ever professed that belief.

MM strawman FAIL

(ps, I must revoke the equivalence of strawman and MM, as MM’s posting tactics encompass much more than just strawmen, and the rest of the egregiously awful posting tactics felt left out)

I simply asked D to clarify his statement that “[a]s with most design patents, this one issued without substantive examination on the merits.”

Any time you want to present a clear and convincing case of invalidity of this particular design patent, please do go ahead. However, given your first couple attempts, I doubt any further attempts from you will be even half as successful.

In any event, what really matters is that you and your fellow patriot anon are here to defend all these design patents against biased communists such as myself, Dennis and, of course, the radical usurper in the White House. Along with 101E and Les, you all have done such a great job over the years educating the public about the rigorous examination of utility patents and how awesome they are as a result. I’m sure your struggle to defend the sanctity of design patents will be at least half as successful. After all, every design patent creates a new job, right? I learned that from a member of your “circle.”

Are you saying that because the examiner didn’t reject it at least once that it wasn’t “substantively examined on the merits”?

I think all he’s saying there’s no prosecution history indicating that a substantive examination was conducted. The only art cited is a few utility patents, most of which relate to mattresses or beach towels. One discloses a sweat band.

This is in spite of the fact that there are patents, including design patents, with the terms “neck towel”, “workout towel” and “scarf / pocket” in the titles (surely the tip of the iceberg0. Indeed, the same Examiner who stamped this patent has examined similar pocketed workout towel patents (of course, they also issued very quickly).

Of all the prior art that exists on neck towels with pockets (some of which are surely relevant), what fraction do you suppose is at the USPTO and readily findable? I’m guessing less than 0.1%. After all, neck towels are really old.